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European IP Practice - Trade Marks

Following the success in establishing a full European patent practice, Finnegan launched its European trade mark practice in April 2016.

Successful companies rely on the power of their brands to communicate the quality and distinctiveness of their products and services. Trade marks are often some of the most valuable assets of a company. Infringement or dilution of a mark can cost millions in revenue and goodwill. We assist UK, European, and international clients with their European trade mark portfolios, particularly with the filing and prosecution of trade mark applications before the UK Intellectual Property Office, the European Union Intellectual property office and at the World Intellectual Property Organization (WIPO). Our London professionals work closely with our U.S. colleagues to ensure consistency in portfolio management as well as enforcement. We can call on the considerable experience in our U.S. offices to assist with international audits, due diligence, trade mark watching, investigations, and licensing.

Trade Mark Prosecution
At our London office we are able to assist clients with all aspects of trade mark clearance, filing and prosecution before the UK Intellectual Property Office and the European Union Intellectual Property Office. We can also file international trade mark applications based on trade marks applied for, or registered, at the UK or EU intellectual property offices. Trade mark applicants who wish to protect their marks in the UK and also use, or intend to use, their mark in the EU can choose to file a European Union trade mark application which will protect their mark in all of the EU member states though a single application and for a single fee.

UK Domestic Trade Marks
As with our U.S. trademark practice, before adopting a trade mark, we advise clients on strategies for selecting “strong” marks that are immediately protectable and registrable. If a client prefers to use a term or mark descriptively, we can advise on how to use the term to place the client in the best possible position should it be challenged. Our counselling during the early phases of trade mark development helps avoid costly conflicts or enforcement problems down the road.

Once a mark is selected, we conduct availability searches and render clear, practical opinions. We carefully evaluate each search request to ascertain the goods or services to search, the type of search to order, and whether to search any supplemental sources. Moreover, our opinions are not based solely on the search results as they appear in the search report. We investigate relevant marks and names to determine if they are in use and, if so, the nature and extent of any rights their owners may possess. Our extensive litigation experience allows us to provide realistic opinions on a mark’s availability, as well as practical recommendations on using and registering the mark to avoid or minimize potential problems.

European Union Trade Marks
Filing an application for a trade mark in the European Union provides a straight forward and cost effective unitary right covering all EU member states. We can assist you with clearance searches covering both the national registers of the EU member countries and the EU database of trade mark registrations. In additional to the services we offer in respect to UK domestic trade marks, we will work with you to consider if your mark is appropriate for use across Europe, particularly to identify marks which might be descriptive or have a negative meaning in the language of another EU member country.

For those with existing national registrations, we can work with you to develop European wide protection by claiming seniority to your older trade mark registrations. This exercise can often save money for clients who rather than maintain and pay fees to multiple national registries, can consolidate all of their marks and fees payable with the EUIPO.

International Trade Marks
As with U.S. prosecution, Finnegan does not treat foreign trade mark filings as routine administrative matters. Rather, we look at the nature of the mark, the U.S. application, U.S. or foreign search results, and potential disputes, and discuss future plans for the mark with the client. We can then develop appropriate foreign filing strategies in terms of the form of the mark and the scope of the goods or services. We have nurtured a network of trade mark lawyers and agents around the world including our own international attorneys at Finnegan to assist with foreign trade mark filings. We select foreign counsel based on their ability to provide the high level of service our clients expect.

Contacts
Cornell, Clare 
Partner, European Trade Mark and Patent Attorney
+44 (0)20 7864 2815 
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